Patent Law

The Patent Office continues to beef-up its discussion of how to enforce Rule 1.56 duties of disclosure.  The most recent announcement declares that the Office will reject any inventor oath or declaration submitted after July 2008 that does not acknowledge a duty to disclose information material to patentability as defined in Rule 1.56.

37 CFR 1.63(b)(3) expressly requires that the oath include a statement that “acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.” Thus, this notice by the PTO can be seen simply as a nice way to announce future enforcement of the law.

The problem: Apparently, many of the oaths currently submitted only acnowledge a slightly narrower duty to disclose information “material to examination in accordince with 1.56(a).” 

Of course, all applicants (and individuals involved in prosecution) have the same duty to disclose regardless of which oath was signed.

• PTO Notice of Oath Enforcement
• Forms are available here: LINK
• Query: Should 1.56 be modernized to include a duty on the company filing the patent allowing us to break free from “the antiquated notion that it is the inventor who files the application, not the company-assignee.”